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Ira P. RothkenIn addition to our robust litigation practice we assist electronic entertainment, high technology, and e-commerce companies in their business, startup, and legal transactions. For example, since the inception of the "commercialized" internet in the mid 1990s, we have represented some of the largest and most successful web sites in the world on a huge range of matters from startup issues to risk reduction strategies to e-commerce policies and agreements. In many instances we were called upon to handle issues where there was no clear precedent and thus we had to innovate a solution.

We have also helped start numerous successful electronic entertainment and videogame companies including Nihilistic Software, Pandemic Games, Telltale, and Arenanet. Ira P. Rothken, a member of IGDA, has spoken multiple times on how to start a videogame development company at the Computer Game Developers Conference (CGDC). Here is a sample of videogame development transactions in which we assisted our clients:

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Today Kim Dotcom and the other defendants, in what is called the largest criminal copyright case in history, filed a petition to the United States Supreme Court for relief against "fugitive disentitlement" and forfeiture of assets.

This case arises from a civil forfeiture action related to a separate criminal case, in which the Government indicted a group of foreign defendants (Petitioners here) on a novel theory of secondary criminal copyright liability. Because Petitioners are lawfully invoking their rights to contest extradition, the Government’s novel theory for prosecuting has yet to be tested in the criminal case.

More than two years after filing the criminal indictment, the Government filed a separate civil action seeking forfeiture of Petitioners’ foreign assets. When Petitioners submitted claims to those assets, the Government successfully moved to strike the claims at the threshold. According to the decisions below, Petitioners’ participation in extradition proceedings—and failure to voluntarily leave their homes, families, and businesses to travel to the United States—has rendered them “fugitives” who seek “to avoid...prosecution” and who therefore should be “disentitled” from contesting forfeiture. 28 U.S.C. § 2466(a)(1). Civil forfeiture has been ordered for this reason alone.

This Court has previously admonished that the “harsh sanction” of fugitive disentitlement in a civil forfeiture action is “most severe and so could disserve the dignitary purposes for which it is invoked,” be- cause it “foreclos[es] consideration of claims on the merits.” Degen v. United States, 517 U.S. 820, 827– 29 (1996) (unanimously reversing resort to fugitive disentitlement under inherent authority). The Court noted that it “ha[d] held it unconstitutional to use disentitlement similar to this as punishment for rebellion against the United States,” but left open the question of “whether enforcement of a disentitlement rule under proper authority would violate due process.” 517 U.S. at 828 (citations omitted). Nonetheless, a divided panel of the Fourth Circuit affirmed civil forfeiture based on fugitive disentitlement.

The Fourth Circuit’s panel decision added to one circuit split by affirming the exercise of in rem jurisdiction over foreign property within the exclusive custody and control of foreign courts. It also compounded two other circuit splits by affirming forfeiture on the ground that the foreigners who own the property should, at the very threshold (without benefit of any discovery or evidentiary hearing), be deemed fugitives who are disentitled from defending their property against civil forfeiture—even while they are lawfully contesting their extradition to the United States through the courts in their home countries, pursuant to treaty rights.

If left undisturbed, the Fourth Circuit’s decision enables the Government to obtain civil forfeiture of every penny of a foreign citizen’s foreign assets based on unproven allegations of the most novel, dubious United States crimes. And the Government can do so without affording a foreign defendant any opportunity to challenge in court whether the foreign assets are traceable to criminal conduct, whether the Government’s allegations are sufficient to establish the charged crime, or even whether the charged “crime” is a crime at all. Civil forfeiture would be a fait accompli just as soon as the Government moves to strike a foreign claimant’s initial submission, invokes fugitive disentitlement, and notes that the foreign claimant remains abroad while lawfully contesting extradition. By nonetheless affirming in all respects, the Fourth Circuit has ratified a worrisome new playbook for the Government to use against foreign nationals whom it indicts while they are abroad: any foreign defendant who dares exercise rights to contest extradition may be deemed a fugitive whose foreign assets are immediately forfeitable to the United States. In other words, according to the decision below, foreign defendants must either abandon their rights to challenge extradition or else forever forfeit their assets (and, correspondingly, their ability to fund a criminal defense).

Megaupload filed their response brief to the MPAA and RIAA studios' motion for preservation order on March 23rd, 2017 in Federal Court in the Eastern District of Virginia. Megaupload agrees that the cloud server data should be preserved and repaired as needed. Megaupload disagreed with the studios on certain proposed language in the draft preservation order that would act to preclude Megaupload from protecting the rights of its users under the Stored Communications Act (SCA) and accessing the data as needed to defend itself and others in the pending court cases. Here is a summary of Megaupload's submissions below.

Defendant Megaupload Limited (“Megaupload”) hereby responds to Plaintiffs’ Motion for Entry of Preservation Order (Dkt. Nos. 61-64). Megaupload agrees that the Court should enter a preservation order in this action and a related private copyright infringement action1 specifying the agreed upon protocol to retrieve, restore, and preserve the cached data on servers that non-party Cogent Communications, Inc. had leased to Megaupload (“Cogent Servers”). Thus, Megaupload agrees to certain paragraphs of the proposed preservation order submitted by Plaintiff (Dkt. No. 61-1). As explained below, however, paragraphs 5 and 8 of the proposed order should not be adopted by the Court. Although written to sound neutral, paragraphs 5 and 8 tread on Megaupload’s rights and impair its ability to access and use that digital evidence in defense of the civil and criminal cases—essentially they enjoin Megaupload from access to this data without any extraordinary showing having been made. Instead, those paragraphs should be edited, and a new paragraph 9 governing Megaupload’s access should be added. A proposed form of order is submitted herewith.

...

The Servers and the Data: The primary servers allegedly used by Megaupload in the United States are the so-called “Carpathia Servers” and the Cogent Servers (which together the government calls the “Mega Servers”). In January 2012, the Government executed search warrants as to Defendants at numerous locations around the world, including at Carpathia’s server-hosting facility in Virginia and at Cogent’s facility in the District of Columbia.3 On January 27, 2012, the Government informed Megaupload that it had “copied selected Mega Servers and copied selected data from some of the other Mega Servers,” without identifying the specific servers, the specific data, or the selection criteria. (Criminal Action, Dkt. No. 32, AUSA Prabhu Letter (Jan. 27, 2012).) At that time, the Government expressly disclaimed any “custody or control” over the Carpathia and Cogent servers:

"The Mega Servers are not in the actual or constructive custody or control of the United States, but remain at the premises controlled by, and currently under the control of, Carpathia and Cogent. Should the defendants wish to obtain independent access to the Mega Servers, or coordinate third-party access to data housed on Mega Servers, that issue must be resolved directly with Cogent or Carpathia.” (Id.).

Yet, thereafter, Megaupload’s access to the data on those servers has been anything but an issue that Megaupload could resolve “directly with Cogent or Carpathia.”

Importantly, Carpathia confirmed that it owns only the servers, but has no interest in the data: “Carpathia does not own and cannot access the data, nor does it have any interest in the data stored on” its servers; rather “its interests are solely in the physical hardware itself.” (Criminal Action, Dkt. No. 39 at 2.) Similarly, Cogent claims no interest in the cached data, only the servers on which the data are stored. As the Internet service provider (“ISP”), however, Megaupload has a statutory interest in the data (and its users have ownership and privacy interests in the data that has been stored).4 Similarly, as a defendant in pending civil and criminal cases, it has an interest in accessing this digital evidence to disprove the claims and charges. Yet, Megaupload has not yet had a clear path to the data on either set of servers.5

When Megaupload tried to acquire the Carpathia Servers so as to gain access to the data, the Government objected to block the sale. (Criminal Action, Dkt. No. 39 at 3.) And the government continues to object to Megaupload’s acquisition of those servers and access to thedata thereon. (Criminal Action, Dkt. No. 223 at 4-5 & n.3.) While again disclaiming any “custody or control” over the Cogent Servers, the government also has objected to Megaupload’s access to the data cached on the Cogent Servers—baldly asserting that it contains “contraband” that cannot be turned over to counsel for Megaupload. (AUSA Prabhu’s Letter to Magistrate Judge Anderson, June 23, 2016.)6

Accordingly, despite claiming that ownership of and access to the data is a private matter between Megaupload, Carpathia, and Cogent, all three have been handcuffed by the government’s objections—the servers and data supposedly are not “in custody,” but neither are they “free to go.”7

...

ARGUMENT

Neither the government nor any party in the civil cases has filed a motion to enjoin Megaupload or preclude Megaload’s access to this data. Obviously, to obtain such extraordinary relief, the movant would have to make a substantial and detailed showing. None has been made. Yet, the government, merely by making bald assertions, and the Plaintiffs, through drafting legerdemain in the proposed preservation order, seek to bar Megaupload’s access to its own data. That is grossly unfair.

To be sure, Megaupload agrees that a preservation order is warranted. In extraordinary circumstances, like those now present, and prior to active discovery in a civil case, the Court has “inherent authority” to issue a “preservation order” that specific procedures be adopted to preserve specific evidence....

The “hacker” is generally considered the perpetual enemy of law firms and corporate legal departments, posing a pervasive and ever-evolving threat to client and corporate data. In some cases, however, attorneys may need to become the hacker they so despise. California technology attorney Ira Rothken describes this as a process of “ethical hacking.”

“Ethical hacking, by its nature, is data recovery and penetration testing with authorization,” Rothken explained. “Typically, this means clients have to give their permission, but can also include instances where individual account owners are unreachable or software has changed substantially.”

On November 18th, 2016 Artem Vaulin filed a reply in support of his motion to dismiss the indictment arguing, amongst other things, that "making available" mere torrent files is insufficient to constitute criminal copyright infringement.

(b) failure to allege even a single actual criminal infringement occurring within the territory of the United States; and

(c) violations of constitutional principles of separation of powers and due process and of prudential principles of copyright law that prohibit the prosecution from inventing new crimes of “running a torrent site” or “encouraging copyright infringement.”1

The Response of the United States is to ignore Vaulin’s constitutional and prudential authorities (see Response at 6-7) and to declare that “the proper vehicle for challenging the sufficiency of the government’s evidence is a trial, not a motion to dismiss an indictment properly returned by the grand jury.” (Response at 1.) The failure of the Response to address defendant’s showing of an improper indictment tacitly admits the impropriety. For example, the failure to allege even a single copyrighted work uploaded, stored, or downloaded to/from such “direct download sites” is not a mere administrative issue it is fatal to the indictment for criminal copyright infringement. The general video streaming alleged in the indictment cannot be prosecuted as a felony. There is no crime of making available a torrent file.

This prosecution violates guidelines set forth in a “Prosecuting IP Crimes Manual” publically posted by the Department of Justice. 2

Sections 26(j) and (v) in the indictment discuss the approximately 11 copyrighted “works in suit” or the works alleged to be criminally infringed and it is limited to allegations of torrent files found on a torrent search engine site in 2016 – most notably not Kickasstorrents.com which was apparently off line by 2011. No actual infringers or infringements and the factual basis for felony direct infringements were alleged in the indictment. The Response fails to counter the overwhelming authorities provided in the motion to dismiss that the storage or transfer of dot torrent files is not direct infringement.

More fatal to the indictment - there are no facts alleged that such works were uploaded, stored, or downloaded from “direct download sites.”

Notwithstanding the government’s erroneous theories of criminal copyright infringement Kickasstorrents.com appeared to seize activity outside the applicable five year criminal copyright statute of limitations period cut off and the indictment appears to contain an error that cannot be reconciled with the government’s own sworn evidence.3 There is little effort to tie with sufficient alleged facts, beyond speculation, the above 2016 torrent site to Artem Vaulin rendering the entire indictment improper.

In another attempt to criminalize torrent sites, the Response asserts a theory of “aiding and abetting,” presenting various historical citations. (Response at 7-8.) But aiding andabetting was removed from the Copyright Act by Congress in 1976 thereby eliminating the crime. The only Federal Court to consider the issue, LaMacchia, supra n. 1, set forth an integrated historical review and stated that: “In 1976, Congress revamped the Copyright Act by eliminating the crime of aiding and abetting copyright infringement.” (871 F.Supp. at 539.) See also Manta, Irina D., The Puzzle of Criminal Sanctions for Intellectual Property Infringement, 24 Harv. J.L. & Tech. 469, 481 (2011) (“Several years later, countering what had been a trend of expansion in the area of criminal sanctions, the Copyright Act of 1976 eliminated the provisions for aiding and abetting . . .”).

The government argues that KAT’s operators “sought out infringing material and trumpeted that to their users, targeting the infringement minded with rewards and honors for posting torrents for copyright infringement material...the indictment sufficiently alleges that defendant entered into an agreement with others to commit copyright infringement, and aided and abetted the copyright infringement of others.” (Response at 14.) The government alleges that defendant “facilitated and promoted” copyright infringement. (Id. at 11, quoting Indictment § 1(b); see also Response at 13 (“encourage, induce, facilitate”). The Indictment and the Response thus allege an invented crime of “encouraging or inducing copyright infringement” — which is the essence of a civil claim arising out of Judge made case law, especially MGM Studios v. Grokster, 545 U.S. 913, 930 (2005) as discussed in the Opening Memorandum at 9.

The aiding and abetting theory, while not applicable due to its elimination by Congress from the Copyright Act, will be addressed arguendo below, and it does not justify invention of a new crime of “encouraging copyright infringement.” Aiding and abetting is applied to an accessory to an actual crime committed by a principal and no such actual crime is alleged in the Indictment.Apparently, under the prosecution’s aiding and abetting theory, actual perpetrators of statutory crimes are potentially scattered among the “millions of individuals in the United States” alleged in ¶ 4 of the Indictment to have had access to KAT. There is no actual perpetrator identified in the Indictment whom defendant Vaulin might have aided or abetted and no specifications of elements of actual statutory copyright crimes. There is no allegation that supports the nature of any primary infringement one is left to guess if a user left the KAT site and later, in the Bittorrent network generally, was engaged in activity that could be punishable as a misdemeanor or through civil liability or one that cannot be punishable at all such as being “extraterritorial”. Defendants cannot commit a felony, as articulated in the indictment, by conspiring or aiding and abetting a KAT user to commit no infringement or an extraterritorial infringement, misdemeanor infringement, or civil infringement. An investigator downloading a torrent file and then leaving the site behind to create in the Bittorrent Network a content file does not pass muster for a felony. See London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 166 D. Mass. 2008 (stating that copyright holder’s investigator’s “own downloads are not themselves copyright infringements because it is acting as an agent of the copyright holder, and copyright holders cannot infringe their own rights”).

This Court should decline the government’s invitation by implication to find that the general Bittorrent ecosystem and “network” and unknown users are copyright felons under US law or that Bittorrent technology and the network are not protected by the Sony doctrine where they are a dual use technology capable of substantial non infringing uses.

Indeed, beyond the failure to raise a proper direct infringement, conspiracy, and aiding and abetting theory of copyright infringement, the failure to allege facts to support that the direct infringements occurred in the United States is also fatal to all the counts. The Court in Subafilmsarticulated the limited reach of US jurisdiction arising from the Copyright Act:

“Even assuming arguendo that the acts authorized in this case would have been illegal abroad, we do not believe the distinction offered by Appellees is a relevant one. Because the copyright laws do not apply extraterritorially, each of the rights conferred under the five section 106 categories must be read as extending "no farther than the [United States'] borders." 2 Goldstein, supra, § 16.0, at 675. See, e.g., Robert Stigwood,530 F.2d at 1101 (holding that no damages could be obtained under the Copyright Act for public performances in Canada when preliminary steps were taken within the United States and stating that "[t]he Canadian performances, while they may have been torts in Canada, were not torts here"); see also Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91, 93 (2d Cir.1981) (reversing an order of the district court that required the defendant to surrender prints of a film because the prints could be used to further conduct abroad that was not proscribed by United States copyright laws).”

The indictment not only fails to alleged sufficient facts to support direct infringement occurring in the United States but fails to allege sufficient facts to support that the mere torrent files for the “works in suit” or “works in the indictment” came from servers in the United States or servers tied to Artem Vaulin. The government cannot equate having a US domain name or US email server to having servers in the United States for the dot torrent files at issue. In addition, the torrent files allegedly related to the “works in the indictment” were apparently obtained in 2016 from foreign servers.

The indictment, distilled to its essence, is based on 11 torrent files downloaded from a foreign server in 2016 with a speculative relationship to Artem Vaulin based on someone’s use of the name “kickasstorrents” in relation to the site.

Defendant is charged only with “making available” and “enabling,” not with actualinfringements. (Response at 15-16.) The government cannot conflate KAT’s automated “making available” a torrent file with a speculative subsequent knowing and willful direct copyright infringement offense against the United States.

In sum, the attempt to hold KAT’s overseas torrent sites as accessories to unspecified copyright crimes committed in unknown ways in the United States by unknown former KAT users is unprecedented and violates multiple constitutional prohibitions. The indictment is so permeated with improper legal theories and insufficient predicate facts to support the elements of felony criminal claims - from improperly conflating dot torrent files into direct criminal infringement to improperly alleging video streaming as a crime that it cannot be trusted that the grand jury was properly instructed with the correct law and legal principles to render a competent decision. Given the problems with the indictment the Court ought to provide extra scrutiny and less deference.

The government initially argues that, in an exercise of discretion, the Court should delay ruling on the motion until defendant personally appears. Defendant has been arrested and incarcerated for a non-existent crime of “making available” 11 torrent files. The government seeks to shield its wrongful inventions of new crimes from judicial scrutiny for a protracted period by charging overseas defendants and by invoking the fugitive disentitlement doctrine. That doctrine is based on inherent powers of the court; such powers should not be subverted for the abusive purposes of this prosecution.

Therefore, the Motion to Dismiss should be granted at the earliest opportunity.

On Monday evening Artem Vaulin filed a Motion to Dismiss the United States Indictment in Federal Court in Chicago, Illinois. Mr. Vaulin argues in the motion that the reproduction and distribution of mere torrent files does not violate criminal copyright statutes. The indictment attempts to hold the purported operator of a torrent search site that is devoid of content files, criminally responsible for the acts of users who go elsewhere to allegedly infringe on copyrighted materials. Under civil copyright law, a person who does not directly use or distribute copyright infringing materials, but aids others in doing so, may be held secondarily liable for infringement. However, “secondary copyright liability” of persons who encourage or induce infringing activities of third parties is only a common-law civil theory of liability that cannot be criminally prosecuted absent an express act of Congress. Congress, however, has declined to enact such legislation.

This case arises out of an erroneous theory of criminal copyright law that attempts to hold defendant Artem Vaulin criminally liable for the alleged infringing acts of the users of KickAss Torrents and the other torrent websites alleged in the indictment to be under Vaulin’s control (collectively referred to as “KAT”).

Websites like KAT are devoid of content files. Instead, KAT is nothing more than a search engine, no different in any material way from Google and other popular website search engines, except that KAT indexes BitTorrent files. Computerized operations at torrent sites acquire, store and distribute uncopyrighted “torrent files” or “torrents.” A torrent file “contain[s] instructions for identifying the Internet addresses of other BitTorrent users.” (Indictment at ¶ 1(a)).

Thus, at its core, the indictment merely alleges that visitors to KAT may take advantage of KAT’s automated search processes to search for and locate “dot torrent” files. Such files contain textual information assembled by automated processes and do not contain copyrighted content. After the visitor leaves the KAT website the visitor may stop and do nothing. Or, after leaving the KAT site, the visitor may choose to use the data in the torrent files identified in a search. However, such use depends on the visitor acquiring and using “thin client” BitTorrent software that users independently download and install on their own computers. Using such third-party software, the visitor may use BitTorrent files that work like links to download materials such as content files, but only if such materials are at that very moment actively being hosted and constructed by other BitTorrent users located elsewhere on the Internet. The fundamental flaw in the government’s untenable theory of prosecution is that there is no copyright protection for such torrent file instructions and addresses. Therefore, given the lack of direct willful copyright infringement, torrent sites do not violate criminal copyright laws.

The indictment attempts hold the purported operator of a torrent search site that is devoid of content files, criminally responsible for the acts of users who go elsewhere to allegedly infringe on copyrighted materials. Under civil copyright law, a person who does not directly use or distribute copyrighted materials, but aids other’s in doing so, may be held contributorily liable for infringement. Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, 545 U.S. 913, 930 (2005). This is known as “secondary” infringement. However, “secondary copyright liability” of persons who encourage or induce infringing activities of third parties (Indictment at ¶ 3) is only a common-law civil theory of liability that cannot be criminally prosecuted absent an express act of Congress. Congress, however, has declined to enact such legislation. Therefore, one cannot criminally conspire to violate a civil common-law copyright prohibition under Grokster and its progeny as it is not an offense against the United States.

Moreover, the indictment also fails to specifically allege that any copyrighted media was downloaded or otherwise infringed within the territory of the United States. This too is critical because the U.S. copyright laws do not protect against extra-territorial infringement. Nonetheless, the indictment merely – and insufficiently – alleges that conduct at issue made copyrighted content “available” to “millions of individuals in the United States.” (Id. at ¶4). Merely “making” copyrighted materials “available” in the United States does not establish actual necessary infringements in the United States.

Ira P. Rothken, founder of the Rothken Law Firm, has written for the Home Office Computing/Small Business Computing Magazine "Legal Matters" Column. Mr. Rothken has written numerous articles on protecting small businesses and the laws of "e-commerce." Mr. Rothken has appeared as a guest legal expert on television and radio including CNNfn (fax/e-mail marketing issues), CNN (internet gambling), Bloomberg (internet copyright law), CNN (internet privacy), KQED radio (computer keyboard injuries), FOX (internet gambling), NBC (internet copyright), CBS (internet privacy), CNET radio (internet copyright), KTVU Silicon Valley Business Report (software license agreements), TechTV (internet law), CNBC (internet copyright law), and Court TV (internet gambling issues and copyright litigation), and has been quoted in numerous publications including legal newsletters, newspapers (Wall Street Journal, NY Times, San Jose Mercury News, San Francisco Chronicle, Newsday), magazines, and law review articles. In addition, Mr. Rothken has spoken at numerous conferences and seminars on internet & e-commerce law including the IAEM Convention, the Computer Game Developers Conference (CGDC), the Annual Meeting of the Free Speech Coalition, the Recorder Legal Newspaper Roundtable, the Practicing Law Institute in San Francisco, California, the Sedona Conference, and the Privacy and American Business Conference in Washington, DC.